TIPS^®  Taiwan Intellectual Property Special

Border Control Mechanism for Trademark and Copyright Protection

In accordance with the newly amended Trademark Law and Copyright Law, the Directorate General of Customs, the Ministry of Finance, announced on June 10, 2003 the “Operation Guidelines for the Enforcement of Border Control Mechanism for Trademark and Copyright Protection” (the “Guidelines), for Customs to stop pirated goods at the border.

In order to facilitate ordinary international trade and to avoid an unnecessary barrier at Customs, the Guidelines provide that a report or tip-off from a copyright or trademark owner (or their attorney) triggers the border control mechanism. Any trademark or copyright owners, or their attorney, who believes that the imported or exported goods may infringe their copyright or trademark right, may report to the Directorate General of Customs or any local custom office in accordance with the Guidelines with required documents and concrete information. Then the Custom will assist the right owner to locate the suspect goods according to the information provided. The information required for a report or tipping-off includes information about the rightful owner, facts of infringement, photos or pictures, as well as descriptions that can help identification of the infringing goods (e.g., photos showing the genuine goods and the counterfeiting goods and the difference), channel of selling the goods, and contact information. A report shall also includes documents proving that the information is correct and concrete, such as the importer or exporter that is alleged to have made the infringement, the alleged infringing goods, the importing or exporting port, date, flight or ship number, cargo number, and the storage site of the goods. If the alleged infringing goods are found, the reporting party (i.e. the trademark or copyright right owner or the attorney) is required to provide a bond to Customs in order to seize the goods, or to request a provisional remedy from the court for Customs to seize the goods.

The Guidelines are only applicable for the protection of copyright and trademarks. For patents, because the determination of patent infringement is much more difficult than that of copyright or trademark infringement, in general a judgement from a court confirming the patent infringement or an order of provisional seizure or injunction from a court is required for Customs to seize the suspect goods.